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What to do while waiting for your patent
February 27, 2014
Anyone familiar with patents knows that is takes a long time to get one and the process can get quite complex and convoluted. What should an inventor do while they wait for their patent to issue? The answer is a lot. Let’s talk about what those things you should be doing while you are waiting for your patent to be published and eventually to issue.
Many of those things are activities that you should be doing anyway to advance your business bus home of them have a particular relevance to Intellectual Property concerns. Along with Market Research and Fund Raising, you need to take those actions that will keep your patent application going and prevent it from stalling out or forcing you into crisis decisions later on.
Part of what you do depends on the kind of patent filing you made. For example, if you filed a provisional patent, you have one year to file its non-provisional equivalent. During that time, you will need to prepare the materials needed for the non-provisional application and since it takes an attorney several weeks to prepare an application, you need to be working with the attorney at least two months from the expiration date of the provisional application. Of course, if you don’t have an attorney or agent, you will need to add in the time to find one.
If you filed a full (non-provisional) application, your first possible action will be when you receive your first “Office Action” from the US Patent office, which usually, but not always, occurs around the application publishing date or 18 months from filing. When you file either a provisional or non-provisional application, you can declare your invention to be “patent pending”. That means that you have put potential infringers on notice that you will eventually be able to force them to pay royalties if they copy you. It also means that you can now publicly disclose your patent or offer it for sale. If you do either of these things before your file for a patent, you lose all rights to patent it later.
Along with your patent application, you might be considering building a brand, in which case you may want to use a trademark or register one. You may have written software or some other part of your invention that should be copyrighted.
Things get more complicated if you are filing patents abroad, using for example a World Patent Application, or WIPO, which requires you to file something called a PCT. That allows you to at a later date file an application in any of the countries you selected and gives you 30 months to do it in.
Another thing you might want to give attention to is the eventual ownership of the patent that you will receive. If you are the sole inventor, that is no problem, but if you have co-inventors or intent a corporation to own the patent, that are many issues to consider. To give you an idea of how complex this can get, you might want to view this video about the IP aspects of the founding of Facebook. The video shows some of the problems you can get into when inventing with others if you don’t negotiate an agreement with them as to who will own rights to any eventual patents.